USPTO Expands and "Enhances" First Action Interview Pilot Program

Under the Enhanced First Action Interview Pilot Program ending April 1, 2010, the examiner will conduct a prior art search and provide the applicant a pre-interview communication, which is a condensed preview of objections or rejections proposed against the claims. Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment or remarks (arguments). The response period to reply to this pre-interview communication can be extended by 30 days.

Should the applicant choose not to have a first action interview, a First Action Interview office action will be promptly issued and the applicant will have one month or 30 days, whichever is longer, to reply. If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims. If agreement is not reached on all claims in regards to patentability, the applicant will be given a First Action Interview office action to which the applicant will be given one month to reply with limited extensions of time and this First Action Interview office action will be considered the first action on the merits. The applicant can also waive receipt of the First Action Interview office action during the interview with the examiner, convert the previously-submitted draft amendment to a formal amendment, and proceed directly to the second substantive examination.

Other aspects of the program include:

Expanding the pilot across more art units in the Technology Centers, depending upon the filing date of the application. New utility nonprovisional applications that fall within one of the following groups may be eligible for the Enhanced First Action Interview Pilot Program:

Applications filed on or before November 1, 2006, and assigned to workgroup 1610 (art units 161X).

Applications filed on or before October 1, 2006, and assigned to art unit 1795.

Applications filed on or before February 1, 2008, and assigned to workgroups 2150 and 2160 (art units 215X and 216X).

Applications filed on or before July 1, 2008, and assigned to workgroups 2440 and 2450 (art units 244X and 245X).

Applications filed on or before June 1, 2007, and assigned to art unit 2617.

Applications filed on or before May 1, 2008, and assigned to art units 2811-2815, 2818, 2822-23, 2826, 2891-2895.

Applications filed on or before December 1, 2007, and assigned to art unit 3671.

Applications filed on or before January 1, 2008, and assigned to art unit 3672.

Applications filed on or before November 1, 2007, and assigned to art unit 3673.

Applications filed on or before February 1, 2008, and assigned to art unit 3676.

Applications filed on or before July 1, 2007, and assigned to art units 3677.

Applications filed on or before November 1, 2007, and assigned to art units 3679.

Applications filed on or before May 1, 2006, and assigned to art unit 3735.

Applications filed on or before April 1, 2007, and assigned to art unit 3736.

Applications filed on or before December 1, 2006, and assigned to art units 3737.

Applications filed on or before August 1, 2006, and assigned to art units 3768.

Applications filed on or before December 1, 2006, and assigned to art unit 3739.

Applications filed on or before September 1, 2007, and assigned to art units 3762 and 3766.

Applications filed on or before September 1, 2006, and assigned to art unit 3769.

Previously, all applicants had to go through all phases of the pilot’s procedure. After receiving a Pre-interview communication that contains the results of the examiner’s prior art search, applicants may now choose from the following:

a. The full pilot procedure (Pre-interview communication, interview and first action).

b. Waiver of the interview (Pre-interview communication and first action only).

c. Waiver of the interview and first action (by filing a reply in compliance with 37 CFR 1.111(b) in response to the Pre-interview communication).

d. Waiver of the first action (by requesting entry of a proposed amendment during the interview).

The time period to reply set forth in the Pre-Interview Communication will be extendable by one additional month. (Previously, the time period for reply was non-extendable.)

The time period within which to conduct the interview will be two months from the date of filing the interview request form. (Previously, the time period was two months from the Office notice date for the Pre-interview communication.)

Failure to timely reply to the Pre-Interview Communication or to timely conduct the interview will not result in abandonment of the application. Instead, a first action will be provided, similar to waiving the interview.

Applicant's request to participate in the program must be filed during the six month life of the program and at least one day before a first Office action on the merits of the application appears in the Patent Application Information Retrieval (PAIR) system. The request to enter the Pilot Program must be made via EFS-Web which can be accessed at: http://www.uspto.gov/ebc/index.html

Washington – The Commerce Department’s United States Patent and Trademark Office (USPTO) today announced that it is expanding its First Action Interview Pilot Program in which an applicant is entitled to an interview with the patent examiner prior to the first office action on the merits in a new utility application. The program will expand to additional technology areas for a six-month period beginning on October 1, 2009. The initial pilot program was limited to two computer-related technology areas.

The initial six-month pilot program, which began April 28, 2008, has shown that the patent process benefits when interaction between the applicant and the examiner are enhanced at the beginning of examination because patentability issues can be resolved early when the applicant and the examiner discuss them one-on-one. For the applications involved in the initial pilot, the First-Action Allowance rate increased six-fold when compared to applications from the same technology area not involved in the pilot.

“When people talk to one another and listen to one another they can quickly understand points of agreement as well as differences, and resolve those differences in real-time,” noted Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “Initial results from this pilot are very impressive and show that interviews present a clear path to resolve issues and move prosecution forward quickly.”

Currently, an applicant may request an interview prior to a first action. Granting of an interview is within the discretion of the examiner who has not yet reviewed the case, and the applicant may be required to identify relevant documents and explain how the invention is patentable over these documents.

Under the expanded pilot program, the examiner will conduct a prior art search and provide the applicant a pre-interview communication, which is a condensed preview of objections or rejections proposed against the claims. Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment or remarks (arguments).

Should the applicant choose not to have a first action interview, a First Action Interview office action will be promptly issued and the applicant will have one month or 30 days, whichever is longer, to reply. If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims. In this interview, if the applicant and the examiner reach agreement on all claims in regards to patentability, a notice of allowance and fees due will be issued. If agreement is not reached on all claims in regards to patentability, the applicant will be given a First Action Interview office action setting forth any requirements, objections and rejections to which the applicant will be given one month or 30 days, whichever is longer, to reply, with limited extensions of time. It is this First Action Interview office action that is considered the first action on the merits in the application.

There have been several improvements made to the program since the initial pilot. For example, the response period to reply to the pre-interview communication can now be extended by 30 days. Also, the applicant can now waive receipt of the First Action Interview office action during the interview with the examiner, convert the previously-submitted draft amendment to a formal amendment and proceed directly to the second substantive examination. This may be preferable to those who would prefer not to wait for the First Action Interview office action and refile the proposed amendment formally.

The USPTO will continue to survey applicants during the expanded pilot to make further improvements to the program.

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